A recent case, Claridge’s Hotel v Claridge Candles, is relevant in understanding what is considered to be genuine use of a trade mark. We will discuss what is considered to be genuine use in case you want to seek invalidation of a registered trade mark.
Claridge’s Hotel v Claridge Candles
Claridge’s Hotel Limited, who own and manage the famous luxury London hotel Claridge’s, made a claim for trade mark infringement and passing off against Claridge Candles Limited and named the small companies owner as a Defendant in the claim.
Claridge’s Hotel were successful in their claim for infringement because of their reputation, however, Claridge Candles were able to revoke one of Claridge’s Hotel trade mark in full and parts of another trade mark due to a lack of genuine use.
What is the basis for a revocation of a trade mark?
You can bring revocation actions on the basis that the trade mark:
- •has not been used
- •has become generic, or
- •is likely to mislead the public
What is genuine use of trade mark?
As with most legal matters, the principles of genuine use were set out in the case London Taxi v Frazer-Nash. The relevant principles include:
- genuine use means actual use of the trade mark by the proprietor or by a third party with authority to use the mark
- the use must be more than merely token, that is to say, serving solely to preserve the rights conferred by the registration of the mark
- the use must be consistent with the essential function of a trade mark, which is to guarantee the identity of the origin of the goods or services to the consumer or end user by enabling him to distinguish the goods or services from others which have another origin
- use of the mark must relate to goods or services which are already marketed or which are about to be marketed and for which preparations to secure customers are under way, particularly in the form of advertising campaigns. Internal use by the proprietor does not suffice. Nor does the distribution of promotional items as a reward for the purchase of other goods and to encourage the sale of the latter. But use by a non-profit-making association can constitute genuine use
- the use must be by way of real commercial exploitation of the mark on the market for the relevant goods or services, that is to say, use in accordance with the commercial raison d’être of the mark, which is to create or preserve an outlet for the goods or services that bear the mark
- all the relevant facts and circumstances must be taken into account in determining whether there is real commercial exploitation of the mark, including:
- whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods and services in question
- the nature of the goods or services
- the characteristics of the market concerned
- the scale and frequency of use of the mark
- whether the mark is used for the purpose of marketing all the goods and services covered by the mark or just some of them
- the evidence that the proprietor is able to provide
- the territorial extent of the use
- use of the mark need not always be quantitatively significant for it to be deemed genuine. Even minimal use may qualify as genuine use if it is deemed to be justified in the economic sector concerned for the purpose of creating or preserving market share for the relevant goods or services. For example, use of the mark by a single client which imports the relevant goods can be sufficient to demonstrate that such use is genuine, if it appears that the import operation has a genuine commercial justification for the proprietor. Thus, there is no de minimis rule
- it is not the case that every proven commercial use of the mark may automatically be deemed to constitute genuine use
The trade mark proprietor bears the burden of proving genuine use of its trade mark. In the Claridge’s Hotel case, the hotel used the gifting of candles to guests as evidence, however the Court stated that gifting of candles to guests was not a genuine use of its trade mark. The reason provided was Claridge’s Hotel was not carried out to create or maintain a market for toiletries.
Revocation of a trade mark can become a contentious matter, and you would need advice from a specialist trade mark attorney, so please contact us if you have such a query.